How to Respond to an Office Action?


In the patent prosecution process, you must be wondering what Office Action means and how you should respond to it. This is a vital part of your patent process because it determines whether your application will be accepted or not. You must have an understanding of what Office Actions are and what the best way is to respond to them. We are here to provide you with a proper guide on all the questions that relate to it.

What is an Office Action and What does it Indicate?

In the patent procedure, you first file your patent application and it undergoes an examination. Once the examination is complete, the patent office sends a formal document, i.e. an office action. This document points out the issues in your patent application. This can include technical and non-technical errors that you will need to look at.

The technical errors are simpler to resolve as they normally pertain to issues with the guidelines, such as formatting errors, writing style issues, etc. However, non-technical errors might be tricky to deal with. The non-technical errors contain deeper issues with the application like the discovery of overlapping prior art.

How to Respond to an Office Action?

Your response to an office action is known as an “Office action response.” Responding to it requires an understanding of two things. You must be aware of the content of the office action and the rules that apply to different kinds of office actions.

In the response, you must fully answer (respond to) all the examiner’s comments regarding the application. An incomplete response to the issues the examiner raises will likely appear “non-responsive” and the examiner won’t consider it further. You must always strive to file a complete response to an office action. An improper response can seriously impair the client’s rights. The examiner may likely issue rejections based on “enablement” of the disclosure or “non-obviousness.”

Related article: Types of Office Actions

What Happens Next?

You can rebut the rejections related to “enablement” by showing where the specification actually discloses the allegedly missing subject matter. Hence, you can argue that the missing subject matter is sufficiently known in the prior art and its disclosure isn’t necessary for enablement. Also, you can amend the pending claims so that they no longer recite this missing subject matter.

Further, you can rebut the rejections related to “anticipation” and “obviousness” by doing one or more of the following:

  • Debating that the examiner has misunderstood the cited reference(s);
  • Arguing that the examiner has misunderstood the applicant’s invention and/or the pending claims;
  • Arguing that the references cited by the examiner cannot properly be combined, and/or
  • Amending the pending claims so that they recite an invention not disclosed in the cited references.

Also, you may respond to a “Restriction Requirement” by selecting (“electing”) the claims directed to one of the inventions, and to remove (cancel) the remaining claims from the patent application.  The canceled claims may be pursued by filing a separate application, known as a “divisional” application, which contains the same specification as the original application and the claims that were canceled in the original application.  The divisional application may be filed immediately or at any time while the original application is pending (not abandoned or issued as a patent). Another way to respond to a Restriction Requirement is to argue that the inventions specified by the examiner are not independent or distinct.

How to File the Response?

The USPTO strongly recommends filing a response electronically through EFS-Web. However, you may submit your response by facsimile or regular mail. You should address each issue the examining attorney raises. Also, include the applicant’s name, mark, serial number, law office, and examining attorney in the body of the response.

Regular mail or facsimile may take some time to reach the USPTO. Hence, you must ensure that your response is timely. Further, at the end of your response, you can add a complete “certificate of transmission” or a “certificate of mailing”.

Need Help with an Office Action? – Patent Drafting Catalyst

We’ve given you some key tips to respond to an office action by yourself. However, you can see for yourself that the precision and the use of correct language aren’t easy to achieve. Therefore, it is highly advisable to hire a professional. Our team boasts 10+ years of experience in supporting patent prosecution with 200+ full-time patent engineers in 30+ technology areas. Our experience includes working with multiple patent attorneys/Firms from multiple countries for patent drafting.

We are always up-to-date about the latest laws and acceptable practices. Our patent engineers understand the importance of comprehensive patent claims in terms of patent commercialization and infringement litigation. We ensure that we draft excellent office action responses with the best results. There will also be no surprise billing so that you only the fee that you fix with us and we ensure that our prices are economical.

To make an inquiry, check out our Patent Drafting Catalyst Services.

Other Related Articles:

Patent Watch: Why Do I Need It?

Intellectual Property (IP) Paralegals Facts

Patent Proofreading Process – Complete Analysis


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